Sec. 271(f) Infringement

BASICS: “(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non-infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.” 35 U.S.C. § 271(f).

a) “component”

Intangible Information (e.g., Software Code In The Abstract) Is Not A “[Combinable] Component” Under Sec. 271(f): Intangible software information, or “software in the abstract detached from any medium” as distinct from a physical copy of software, is not a “combinable component” under Sec. 271(f) (assuming that the “patented invention” is tangible). Thus, exporting master disks or electronic transmissions of software (as distinct from exporting “installation copies” designed to be inserted into the foreign computers) does not trigger Sec. 271(f) liability. AT&T (U.S. 04/30/2007). This extends to “design tools,” i.e., “anything containing design information, e.g., a schematic, template, or prototype” or blueprint. SeeLife Tech. (Promega) (U.S. 02/22/2017) (7-0) (“The holding in [AT&T (U.S. 04/30/2007)] turned not on the number of components involved, but rather on whether the software at issue was a component at all.”)

“Component” May Or May Not Refer To Element Of Patent Claim: “We do not consider how to identify the ‘components’ of a patent or whether and how that inquiry relates to the elements of a patent claim.” Life Tech. (Promega) (U.S. 02/22/2017) (7-0).

Status Of Installation Disk Unsettled: S. Ct. in AT&T (U.S. 04/30/2007) mentioned but did not resolve whether exporting installation disks, or transmitting code directly to end user computer, would trigger Sec. 271(f) liability, with three-Justice concurrence saying No and four-Justice plurality saying it need not decide the issue.

Sec. 271(f) Does Not Apply To Method Claims: The “components of the process are the steps of the process,” and supplying an intangible step is a physical impossibility. Cardiac Pacemakers (Fed. Cir. 08/19/09) (en banc) (overruling Union Carbide (Fed. Cir. 10/03/05).)

b) sec. 271(f)(1)

Exporting A Single Component Is Not Enough Under Sec. 271(f)(1): “We hold that the phrase ‘substantial portion’ in 35 U.S.C. § 271(f)(1) has a quantitative, not a qualitative, meaning. We hold further that § 271(f)(1) does not cover the supply of a single component of a multicomponent invention.” Life Tech. (Promega) (U.S. 02/22/2017) (7-0) (although statute’s phrase “substantial portion” is “ambiguous,” the neighboring terms (“all,” “portion” and “of the components of the patented invention”) and the structure of Sec. 271(f)(1) and (2) support only a quantitative interpretation of the phrase, and that plural components are necessary), rev’gPromega I (Fed. Cir. 12/15/14) (2-0 on this issue, not reached by the dissent) (a single component may qualify as “all or a substantial portion of the components of a patented invention,” where it is important or essential. Component was staple-article component (Taq polymerase enzyme) of five-element combination). “We do not today define how close to ‘all’ of the compo­nents ‘a substantial portion’ must be.” Life Tech. (Promega) (U.S. 02/22/2017).

Do Not Need To Induce A Third Party: The statutory language “actively induce the combination” merely requires causing the combination, not inducing a third party to make the combination. Promega I (Fed. Cir. 12/15/14) (2-1 on this issue) (rev’g JMOL of no Sec. 271(f)(1) infringement, where defendant exported one component of a kit and its UK subsidiary assembled rest of the kit outside U.S. for worldwide sales), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.).

c) sec. 271(f)(2)

Covers Domestic Activities Only – No Foreign “Infringement” Required: Under Sec. 271(f)(2) (and probably also under (f)(1)), there is no need to show any activity outside the U.S. (e.g., actual assembly into the patented combination). Cf. Promega I (Fed. Cir. 12/15/14) (“Congress’ chosen language [in Sec. 271(f)(1)] assigns liability to LifeTech’s conduct within the United States, based on its extraterritorial effect.”), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.) Sec. 271(f) no more reaches foreign uses of patented inventions than does Sec. 271(a). Cf. WesternGeco (Fed. Cir. 07/02/15) (2-1) (rev’g award of lost profits based on foreign uses of system combined and used abroad from components exported from U.S., in view of the “presumption against extraterritoriality”) (3-judge dissent from en banc rehearing denial (10/30/15) (citing copyright law’s “predicate-act doctrine, which posits that a plaintiff may collect damages from foreign violations of the Copyright Act so long as the foreign conduct stems from a domestic infringement”), rev’d, WesternGeco III (U.S. 06/22/2018) (7-2) (as “the infringement” is the focus of Sec. 284, domestic export of components is the focus of Sec. 271(f)(2), damages is not a substantive element of the cause of action, and the “over­seas events were merely incidental to the infringement,” the “conduct relevant to the statutory focus in this case is domestic,” thus “we hold that WesternGeco’s damages award for lost profits was a permissible domestic application of § 284.” But, “in reaching this holding, we do not address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases.”).

Similar To Contributory Infringement, But Broader: While this Section borrows terminology from Sec. 271(c), it does not (at least under (f)(2)) require that a final patented assembly be assembled. SeeLife Tech. (Promega) (U.S. 02/22/2017) (raising but not deciding whether intent requirements for Secs. 271(f)(1) and (2) differ.)

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